OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) OPERATIONS DEPARTMENT DESIGNS SERVICE DECISION OF THE INVALIDITY DIVISION OF 23/04/2014 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD 9293 COMMUNITY DESIGN 002249763-0049 LANGUAGE OF PROCEEDINGS English APPLICANT ORIENT HOME OOD 66, Knyaginya Maria Luiza Blvd. 1202 Sofia REPRESENTATIVE OF THE APPLICANT Valentina Velikova Nesheva PATENT UNIVERSE 20, Dimitar Manov Street 1408 Sofia HOLDER DOORS BULGARIA EOOD j.k. Pobeda, bl. 9, floor 2, app. 10 9000 Varna REPRESENTATIVE OF THE HOLDER Kostadin Manev 73, Patriarh Evtimii Blvd., fl. 1 1463 Sofia Avenida de Europa, 4 E - 03008 Alicante Spain Tel. +34 96 513 9100 Fax +34 96 513 1344
The Invalidity Division, composed of Ludmila Čelišová (rapporteur), Jakub Pinkowski (member) and Martin Schlötelburg (member) took the following decision on 23/04/2014: 1. The registered Community design No. 002249763-0049 is declared invalid. 2. The Holder shall bear the costs of the Applicant. I. FACTS, EVIDENCE AND ARGUMENTS (1) The Community design nº 002249763-0049 (hereinafter the RCD ) has been registered in the name of the Holder with a date of filing of 05/06/2013. In the RCD, the indication of products reads doors. The design was published in the Community Designs Bulletin in the following view: (https://oami.europa.eu/esearch/#details/designs/002249763-0049) (2) On 31/10/2013, the Applicant filed an application for a declaration of invalidity ( the Application ). (3) The Applicant requests a declaration of invalidity of the RCD on the grounds that the RCD does not fulfill the requirements of Articles 4 to 9 of the Council Regulation (EC) nº 6/2002 on Community Designs (hereinafter CDR). 2
(4) As evidence, the Applicant provides a copy of Romanian design registration nº 020125 for door, filed on 05/06/2012, and published following registration in the Official Bulletin of State Office for Inventions and Marks of Romania no. 6/2012 (issued on 05/07/2012). The Applicant indicates design no. 1 in the following view as a prior design (hereinafter the prior design ): (5) In the reasoned statement, the Applicant claims that the RCD lacks novelty and individual character with respect to the prior design disclosed in the Romanian design registration. The RCD is a coloured photograph of the prior design, which is the only difference between the designs. The prior design and the RCD are identical therefore the RCD should be declared invalid. (6) In the response the Holder submits that the Office has to assess designs as registered and disclosed, i.e. in a brown-wood colour of the door board in combination with a light gray colour of wavy elements (and a snowflake pattern on them) as regards the contested RCD, and as black and white photograph as regards the prior design. The designs differ in the colours, which is substantial difference in view of the customer who is particularly observant when chooses the door to be in harmony with the rest of an interior. Moreover, the contour around the decorative element in the RCD is in the colour of the door, whereas it is white in the prior design, there is a door frame in the RCD, there is a sign in the right down corner of the contour of the RCD, and the handle with lock fitting. The designs should not be assessed on features which are not clearly disclosed in the registration. (7) According to the Holder the differences in the colour pattern, ornamentation and details are sufficient to create different overall impression. [T]he attention to detail that the informed user is likely to exercise when making a decision to purchase those goods are sufficient argument to provide that compared designs are producing a different overall impression on the informed user in the sense of art. 6 CDR. The application for declaration of the invalidity of the RCD should be rejected. (8) For further details to the facts, evidence and arguments submitted by the parties, reference is made to the documents on file. 3
II. GROUNDS OF THE DECISION A. Admissibility (9) The indication of the grounds for invalidity that the RCD does not fulfill the requirements of Articles 4 to 9 is clearly stated in the Application as required in the Article 28(1)(b)(i) CDIR 1. The Application is admissible since it contains an indication of the facts, evidence and arguments submitted in support of those grounds pursuant to Article 28(1)(b)(vi) CDIR, and since it meets the other requirements of Article 28(1) CDIR. B. Substantiation B.1 Disclosure (10) According to Article 7(1) CDR for the purpose of applying Articles 5 and 6, a prior design shall be deemed to have been made available to the public if it has been published following registration or otherwise, or exhibited, used in trade or otherwise disclosed, before the date of filing of the application for registration of the contested design, except where these events could not reasonably have become known in the normal course of business to the circles specialized in the sector concerned, operating within the Community. (11) The prior design has been published following the registration at the national office of an EU member state prior to the date of filing of the contested RCD and hence it has been made available to the public within the meaning of the Article 7(1) CDR. B.2 Novelty (12) According to Article 5 CDR the RCD lacks novelty when an identical design has been made available to the public prior to the date of filing of the RCD. Designs shall be deemed to be identical if their features differ only in immaterial details. (13) The RCD is a wooden-like door with a glass-like filling (of a grainy or tiny snowflake-like pattern - as the Holder suggests) and with a metallic handle and lock fitting. The prior design is registered in the form of a black and white photograph having the same wooden-like and grainy glass-like pattern of the door as the RCD. Colours and handle with lock fitting are not disclosed in the prior design. As they are not immaterial details, the RCD is new with respect to the prior design. B.3 Individual character (14) According to Article 6 CDR, the RCD lacks individual character if the overall impression produced on the informed user is the same as the overall impression produced on such a user by any design which has been made 1 Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No. 6/2002 on Community designs. 4
available to the public before the date of filing of the RCD or the date of the priority claimed. In assessing individual character of the RCD, the degree of freedom of the designer in developing the design shall be taken into consideration. (15) The informed user, from whose perspective the test is performed, is, according to the established case-law, a particular observant, is aware of the state of the art in the sector concerned, and uses the product related to the RCD in accordance with the purpose for which the product is intended (see judgement of 9 September 2011, T-10/08, Internal combustion engine, paragraphs 23 to 25). (16) In the present case the informed user is aware of designs of doors, which were available on the market before the filing date of the contested RCD. The informed user is familiar with common features of the products concerned: a board, which follows the dimensions of the door frame for which the door is intended to be used, and a handle with lock fitting, which can be placed on the left or right side. The appearance of these parts (safe to the dimensions and location of the locking) has no limitation as concerns technical requirements and products on the market differ in concrete making of these parts. The perception of the informed user may be, however, influenced by the density in the relevant field. (17) The RCD and the prior design are identical in all parts except the colours and handle with lock fitting. Though these features are easily recognizable, being the only ones in the RCD in which it differs from the prior design, they do not deliver to the contested RCD individual character. The dark wood and glass combination is not unexpected on the market with doors, neither the metallic handle and lock fitting. (18) The Office agrees with the Holder that the representation of the prior design is not of the highest quality, however, it allows recognizing substantial features of the design, such as the wavy glass part in an engraved frame. The Office does not find the difference in the frame claimed by the Holder and it cannot recognize the claimed sign in it. Both the designs have a door frame. The designer of the RCD did not use the freedom in developing the contested design. The RCD does not produce different overall impression on the informed user therefore it does not have individual character. C. Conclusion (19) The RCD is declared invalid on the grounds of Article 25(1)(b) CDR in conjunction with Article 6 CDR, due to the lack of individual character. III. COSTS (20) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Holder bears the fees and costs of the Applicant. (21) The costs to be reimbursed by the Holder to the Applicant are fixed to the amount of 750 Euro, composed of 400 Euro for the costs of representation and 350 Euro for the reimbursement of the invalidity fee. 5
IV. RIGHT TO APPEAL (22) An appeal shall lie from the present decision. Notice of appeal must be filed at the Office within two months after the date of notification of that decision. The notice is deemed to have been filed only when the fee for appeal has been paid. Within four months after the date of notification of the decision, a written statement setting out the grounds of appeal must be filed (Article 57 CDR). THE INVALIDITY DIVISION Ludmila Čelišová Jakub Pinkowski Martin Schlötelburg 6